The Complainant is Banana Republic (Apparel), LLC, United States of America (the “United States”), represented by The Gigalaw Firm, Douglas M. Isenberg, Attorney at Law LLC, United States.
The Respondent is Chukwuka Obeleagu, Fudmart Tech Resources, Nigeria. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2019. On July 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2019. On July 25, 2019 the Center received an informal email communication from the Respondent. The Center notified the Parties the Commencement of the Panel Appointment Process on August 22, 2019.
The Center appointed Taras Kyslyy as the sole panelist in this matter on August 27, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a global apparel and accessories brand founded in 1978 in San Francisco, California (United States), and located in about 700 company-operated and franchise retail locations worldwide. The Complainant has been consistently ranked on multiple lists of the world’s top brands, including “Best Retail Brands” by Interbrand.
The Complainant directly and indirectly owns at least 1,195 trademark registrations or applications in at least 169 countries or jurisdictions worldwide (including 10 in Nigeria) for marks that consist of or contain BANANA REPUBLIC including Registration No. 1,347,849 (first used November, 1978; registered July 9, 1985) in the United States.
The Complainant via its parent company Gap Inc. is the registrant of and uses the domain name (created December 29, 1995).
The disputed domain name was registered on February 20, 2019 and on the date of the Complaint resolved to a website that includes a photo of a man and woman who appear to be a romantic couple, and also includes text and a link that says, “Want to make N200/day, Click HERE to join Telegram group to learn more.” Currently the website also suggests dating services.
The Complainant addressed the Respondent with cease and desist letters, which were never answered. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The Complainant (or its predecessor or related companies) has rights in and to the BANANA REPUBLIC trademark. The disputed domain name contains the BANANA REPUBLIC trademark (and only the BANANA REPUBLIC trademark) in its entirety. The Top-Level Domain (“TLD”) “.website” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the BANANA REPUBLIC trademark in any manner. The Respondent has not used or made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services and, therefore, cannot establish rights or legitimate interests in the disputed domain name. By using the disputed domain name in connection with a website that includes a prominent photo of a man and woman who appear to be a romantic couple, wearing clothing similar to that offered by the Complainant and/or other Gap Inc. brands, the Respondent’s actions are not bona fide. The Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, and, therefore, cannot establish rights or legitimate interests in the disputed domain name. By using the disputed domain name in connection with a website that includes a prominent photo of a man and woman who appear to be a romantic couple, wearing clothing similar to that offered by the Complainant and/or other Gap Inc. brands and similar to the Complainant’s own advertisements, the Respondent’s actions are clearly misleading and not fair.
The disputed domain name was registered and is being used in bad faith. Registration of the disputed domain name that is identical or confusingly similar to the famous or widely-known Complainant’s trademark by an unaffiliated entity can by itself create a presumption of bad faith. It is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name given the fame of the Complainant’s trademark. The oldest existing registration for the BANANA REPUBLIC trademark was first used 41 years and registered 34 years before the Respondent’s registration of the disputed domain name. Because the disputed domain name is so obviously connected with the Complainant, the Respondent’s actions suggest opportunistic bad faith. The Respondent is using the disputed domain name in connection with a website that includes a prominent photo of a man and woman who appear to be a romantic couple, wearing clothing similar to that offered by the Complainant and/or other Gap Inc. brands, similar to some of the Complainant’s advertisements, which indicates that the Respondent acted in bad faith. This is true even if the Respondent’s website is not primarily an ecommerce website offering products or services for sale. The Complainant sent at least three emails to the Respondent, however no reply followed, which is bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. In its email communication of July 25, 2019, the Respondent stated: “I purchased this domain name legally through Bluehost. If the complainant wishes to purchase the domain name from me. They will have to purchase it for a Sum of $1000 paid via Bitcoin. Am open to negotiate with them, if they wish to. Regards”. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in its registered trademarks.
According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), the applicable TLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards the TLD “.website” for the purposes of the confusing similarity test.
According to section 1.7 of the WIPO Overview 3.0, in cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that in the present case the disputed domain name incorporates the Complainant’s trademark in its entirety.
Considering the above the Panel finds the disputed domain name is identical or confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.
The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPOCase No. D2014-1875).
The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642).
Considering the above and based on the available record, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to section 3.1.4 of the WIPO Overview 3.0, the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark, both in the United States and internationally. Thus, the Panel finds that the disputed domain name identical to the Complainant’s trademark was registered in bad faith.
Given the circumstances of the case the Panel finds that at the time of the registration of the disputed domain name the Respondent knew, or at least should have known about the existence of the Complainant’s earlier registered and known trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113).
The Complainant alleges that the Respondent’s use of the disputed domain name is clearly misleading and not fair.
The Respondent ignored its possibility to comment on the contrary and provide any good explanations to prove its good faith while registering and using the disputed domain name.
Moreover, the Respondent failed to respond to the Complainant’s cease and desist letters, and did not provide any good reason to justify this, which confirms the bad faith (see, e.g., Compagnie Générale des Établissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022). In its email communication of July 25, 2019, the Respondent did not provide a credible explanation to justify its registration of the disputed domain name. On the contrary, in its message the Respondent offered to sell the disputed domain name for “$1000”.
Without a credible explanation from the Respondent, the Panel infers that the Respondent somehow unfairly benefits from the disputed domain name, which is identical to the Complainant’s trademark.
Considering the above, the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Taras Kyslyy
Sole Panelist
Date: September 10, 2019
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